USE OF THE TRADEMARK IN VIETNAM

1. Definition of “use of the trademark in Vietnam”

According to Article 124.5 of Intellectual Property Law, the use of the trademark in Vietnam means the performance of the following acts:

a/ Affixing the protected mark on goods, goods packages, means of business, means of service provision, transaction documents in business activities;

b/ Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;

c/ Importing goods or services bearing the protected mark.

 

2. How to protect your trademark effectively in Vietnam?

2.1. Using properly trademark in Vietnam

According to Article 5 C-2 of Paris Convention, the use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.

Vietnam is a member of the Paris Convention so the aforesaid Article will be considered. However, under our National Law, there is no specific provision provided for alternation of distinctive characters OR change the nature of trademark OR change mark substantially. Under our current practice, it will be considered very strictly and much depends on the opinion of the trademark examiner. Therefore, it is recommended to use the trademark as the registered one for avoiding a non-use cancellation.

 

 

2.2. Presenting the evidence of use of the trademark in Vietnam in case of receiving a non-use cancellation raised by a third party

 

Under the current regulation, the validity of a certificate of trademark registration in Vietnam shall be terminated if it has not been used by its owner or his/her registered licensee without legitimate excuse for 5 consecutive years prior to a request for cancellation, except where the use of the trademark in Vietnam is commenced or resumed at least 3 months before the request for cancellation.

In such a case, the holder of trademark registration is required to submit the actual evidence of use of the trademark in Vietnam market for commercial purposes for overcoming the non-use cancellation. The evidence/materials include but are not limited to the followings:

• The documents certifying the import of the products bearing the protected mark into the Vietnam market places, such as:
• Customs declaration, Bill of lading, packing lists;
• Commercial contract;
• Commercial invoice.

• The documents proving the manufacture and trading of the products bearing the protected mark in Vietnam market places, such as:
• Bill of raw materials/inputs;
• The photos of the factory, especially the production line of the goods bearing the trademark;
• Purchasing contract.
• Official invoices.

• Other documents, such as:
• SWIFT messages certified by the bank concerned;
• Distribution contracts with other local distributors in Vietnam.

 

2.3. Proceeding with the Customs border watching procedures 

To prevent others from exporting or importing goods bearing identical or confusingly similar sign to the protected trademark, it is advisable to proceed to file the Request for Customs Border Watching with the Custom the General Department of Vietnam Customs. In case the Request for Customs Border Watching is accepted by the General Department of Vietnam Customs, they will convey watching contents to all provincial Customs Department(s) and then to local Customs Divisions at the border gates to implement measures for watching. The time limits for border gates watching is 02 years and can be extended to a further two years.

During the period of watching, if any imported product is suspected to be counterfeiting or infringing products, Customs officers will inform us to proceed with procedure for temporary suspension of customs clearance. 

 

3. Parallel import in Vietnam

Parallel imports (sometimes referred to as gray market goods) refer to branded goods that are imported into a market and sold there without the consent of the owner of the trademark in that market. The goods are “genuine” goods (as distinct from counterfeit goods), in that they have been manufactured by or for or under license from the brand owner. However, they may have been formulated or packaged for a particular jurisdiction, and then are imported into a different jurisdiction from that intended by the brand owner.

Parallel imports are generally allowed in Vietnam (Article 20 and Article 125.2 of the IP law). Vietnam’s legal provisions on parallel imports, meanwhile, can help ensure adequate access to IP protected imports. The regulation of parallel trade involves balancing the interests of local consumers and distributors, particularly with regard to pharmaceutical and agrichemical products. However, as being a soon-to-be member of the Trans-Pacific Partnership (TPP), Vietnam will regulate the provisions to restrict the parallel imports in case without the consent of the owner of the trademark in Vietnam.

More information about trademark practice in Vietnam can be found HERE.

In case you require more information or require advice on trademark in Vietnam, Laos, Cambodia and Myanmar as well as other IP matters, please do not hesitate to contact us via email: info@ageless.vn